Huntley sued Monterey Mushrooms for infringement of the patent, twice. After the first lawsuit was filed, Monterey Mushrooms moved to dismiss for lack of subject matter jurisdiction and lack of standing. Huntley dismissed the suit without responding to the motion. About nine months later he took his second bite. The complaint alleged that Huntley L.L.C. owned an equitable interest in the patent, nothing more.

No heavy lifting for the court on this one. First, only legal owners of patents have standing, and Huntley was neither inventor nor assignee of the patent. Second, Huntley didn’t even have an equitable interest. The engagement letter had no language about assignment or that any interest would inure to Huntley’s benefit if EPL Technologies didn’t pay the bill. Recording the purported interest with the PTO didn’t make it so (see 37 C.F.R. § 3.54, “The recording of a document . . . is not a determination by the [PTO] of the validity of the document or the effect the document has on the title to an application, a patent, or a registration.”), nor was it signed by either EPL Technologies or Monterey Mushrooms.

Case dismissed with a bonus; Huntley has to pay Monterey Mushrooms’ attorney fees for having to defend the same claim twice.

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Ms. Chestek is admitted to practice in Connecticut, the District of Columbia, Massachusetts, New York and North Carolina and is Board Certified by the North Carolina State Bar's Board of Legal Specialization in Trademark Law.

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